Posts Tagged: "federal rules of civil procedure"

On Tuesday, the U.S. Court of Appeals for the Federal Circuit (CAFC), with Judge Hughes writing for the court, dismissed defendant-appellant LG Electronics Inc. and LG Electronics U.S.A. Inc.’s (collectively, ‘LG’) request for interlocutory review due to lack of jurisdiction; the court said LG had failed to file within 30 days of the date at which the liability issues became final, resulting in an untimely appeal. In 2014, Mondis Technology, Ltd. (“Limited”) sued defendants for patent infringement over U.S. Patent No. 7,475,180(“the ‘180 patent”), which claims a “display unit configured to receive video signals from an external video source.” The district court granted Limited leave to join other plaintiffs, namely, Hitachi Maxell, LTD., NKA Maxell Holdings, LTD., Maxell, LTD., (collectively ‘Hitachi’) to address LG’s pretrial standing challenge. A jury trial in the United States District Court for the District of New Jersey found LG infringed claims 14 and 15 of the ‘180 patent, the claims weren’t invalid, and the infringement was willful. The jury then awarded plaintiffs $45 million in damages. 

Recently, the Federal Circuit reversed, vacated and remanded a decision of the U.S. District Court for the District of Colorado that granted Mushkin, Inc.’s (“Mushkin’s”) motion to dismiss Anza Tech.’s (“Anza”) complaint seeking damages for alleged patent infringement occurring between March 2011 and April 2012 because the claim for damages was time-barred by the six-year statute of limitations in the Patent Act, 35 U.S.C. § 286. See Anza Tech., Inc. v. Mushkin, Inc., No. 2019-1045, 2019 U.S. App. LEXIS 24432 (Fed. Cir. Aug. 16, 2019) (Before Prost, Chief Judge, Newman and Bryson, Circuit Judges) (Opinion for the Court, Bryson, Circuit Judge). In its determination of whether newly alleged claims, based on separate patents, relate back to the date of the original complaint, the Federal Circuit considered: (1) the overlap of parties, (2) the overlap in the accused products, (3) the underlying science and technology, (4) time periods, and (5) any additional factors that might suggest a commonality or lack of commonality between the two sets of claims.

On June 28, the U.S. Supreme Court granted certiorari to take up a pair of cases that could affect how trademark cases are argued in federal courts. In Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., the Court will determine whether federal preclusion principles bar defendants from raising defenses that could have been raised in previous cases between the same parties, even when the plaintiff asserts new claims. In Romag Fasteners, Inc. v. Fossil, Inc., SCOTUS will decide whether a finding of willful infringement is required to award an infringer’s profits in cases involving false designation of origin or false description.

The Federal Circuit recently reversed the Western District of Washington’s dismissal under Rule 12(b)(6) of the Federal Rules of Civil Procedure where the district court held that the claimed subject matter was ineligible for patenting under 35 U.S.C. § 101. Specifically, the Federal Circuit, reviewing the decision de novo, concluded that the claimed method of improving security was a non-abstract computer-functionality improvement because it was done by a specific technique that departs from earlier approaches resulting in a beneficial reduction of the risk of hacking.

Maybe I’m being too optimistic. But in a pair of decisions issued within a week of each other, Berkheimer v. HP and Aatrix Software v. Green Shades, the Federal Circuit just vacated two patent ineligibility determinations… And if you think these declarations are too good to be true, take a look at the decisions, both drafted by Judge Moore. Both are in the software field… The Court held that the district court erred in granting summary judgment of ineligibility with respect to some of Berkheimer’s claims… In Aatrix Software v. Green Shades, the Court vacated a Rule 12 dismissal for lack of patent eligibility.

In its decision, the Federal Circuit upheld a lower court’s ruling that Advanced Video did not have standing to sue for patent infringement after it was determined that the co-owner of the patent did not assign ownership to the patent under the terms of an employment agreement… Although Hsiun never signed an assignment declaration, she also never objected to the USPTO procedures leading up to the grant of the ‘788 patent. Newman’s dissent focused mainly on the terms of Hsiun’s employment agreement, which demonstrated that Ms. Hsiun’s inventions were the property of the employer.

The U.S. Court of Appeals for the Federal Circuit recently issued its decision in In re Micron Tech., Inc., Case No. 2017-138 (Fed. Cir. Nov. 15, 2017), and resolved a question that had divided district courts and commentators throughout the United States following the U.S. Supreme Court’s ruling in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017):  Did TC Heartland change the law of venue in patent cases such that a party’s failure to raise a venue defense in its initial responsive pleading could be excused?  The Federal Circuit held: “We conclude that TC Heartland changed the controlling law in the relevant sense: at the time of the initial motion to dismiss, before the Court decided TC Heartland, the venue defense now raised by Micron (and others) based on TC Heartland’s interpretation of the venue statute was not “available,” thus making the waiver rule . . . inapplicable.”

On May 22, 2017, in TC Heartland LLC v. Kraft Foods Group Brands, LLC, 137 S.Ct. 1514 (2017), the Supreme Court held that patent venue is controlled exclusively by 28 U.S.C. § 1400(b), which restricts venue in patent cases to (1) where the Defendant resides, or (2) where the Defendant commits an act of infringement and has a regular and established place of business. The decision was immediately hailed by commentators as a significant break with past precedent… Despite the common perception of practitioners that the TC Heartland decision changed the law of venue in patent cases, the majority of district courts to address this issue have come to the opposite conclusion, finding that the decision merely reaffirmed existing law and could not excuse the failure to raise the defense earlier. The reasoning of these decisions is questionable, as is the refusal of these courts to recognize how dramatically TC Heartland changed the landscape for patent litigation.

The effects of proposed Rule 11 on the patent system will be like putting an additional bullet to a dying man. As far as patent litigation is concerned, the pending rule is intended to deliver what was missed in the AIA: shifting fees from infringers to patent owners.

Congressman Lamar Smith (R-TX), has sponsored a bill to amend Rule 11 — H.R. 720. The changes are made to remove the safe harbor provision and make sanctions mandatory. This bill has passed the House. A companion bill — S. 237 — has been introduced in the Senate with no action yet being taken… The proposed changes to Rule 11, if enacted, will have an impact of keeping unrepresented parties out of courts, and make the U.S. courts even more inefficient. It will have an adverse impact on patent owners in patent cases… Given the nature of patent litigation, experience teaches that it is inevitable that whenever a case is disposed of the winner will almost certainly try to shift litigation fees by any means possible, including by invoking Rule 11 sanctions. The parties with strong financial powers will have better chances to get sanction awards.

Under the Federal Rules of Civil Procedure, a party waives its right to assert a defense of improper venue when it fails to raise the defense in a pleading or with other Rule 12 motions.  Importantly, however, that waiver only takes effect if the defense was “available” to the party at the time of filing either the pleading or motion.  Many circuits, including the Federal Circuit, interpret that requirement by recognizing an intervening law exception to the waiver of a defense, whereby an intervening change in law makes available a defense that had not previously been available.  Does the Supreme Court’s decision in TC Heartland constitute a change in the law?  Was the defense of improper venue unavailable until May 22, 2017?

Last December, the 2015 Amendments to the Federal Rules of Civil Procedure abolished Rule 84 and the Appendix of Forms, removing any doubt that Twombly’s plausibility standard applies to claims for direct patent infringement. The elimination of Rule 84 and Form 18 raised many questions about whether pleading standards for direct infringement would change and, if so, how. Over the past year, many district courts have tried to answer these questions. Below is an overview of the different conclusions reached by district courts, but first, it would be worth reviewing Federal Circuit precedent on the issue.

The Trademark Trial and Appeal Board (TTAB or the Board) Rules of Practice will change on January 14, 2017. The new rules will be applicable to all inter partes (oppositions, cancellations, concurrent use) and ex parte appeal proceedings, including those pending on January 14, 2017. The main changes to be aware of are outlined below:

The Federal Circuit affirmed a district court’s dismissal under Rule 12(b)(6) for failure to meet the pleading standards for joint patent infringement, holding that Form 18, from the Appendix to the Federal Rules of Civil Procedure, does not apply to a claim of joint infringement… Form 18 is not sufficient per se, and pleadings must adhere to the Twombly/Iqbal pleading standard, and must do so for each element of the allegedly infringed patent claim. This is particularly true for pleading joint infringement.